Ex Parte 7493643 et al

Patent Trial and Appeal Board

Sep 8, 2016

90013359 (P.T.A.B. Sep. 8, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,359 09/30/2014 7493643 003597-0048-501 4382
75563 7590 09/08/2016
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/08/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROVI GUIDES, INC.,
Patent Owner and Appellant
____________

Appeal 2016-005109
Reexamination Control 90/013,359
Patent 7,493,643 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, KEVIN F. TURNER, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge

Opinion Concurring filed by JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This proceeding arose out of a request for ex parte reexamination of
U.S. Patent No. 7,493,643 B2 (“the ’643 patent”) to Michael D. Ellis, titled
Program Guide System with Video-on-Demand Browsing, issued February
17, 2009, and assigned to United Video Properties, Inc.
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Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the
Examiner’s rejection of claims 1–108. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on August 10, 2016.
The disclosed invention relates generally to an interactive television
program guide system. Spec. 2:21–22.
Independent claim 7 reads as follows:
7. A method for providing an interactive television video-on-
demand program guide system implemented on viewer television
equipment having a main display screen comprising:
displaying a program guide display on the viewer television
equipment that displays at least one video-on-demand program
listing;
indicating that a video clip preview is available for a video-
on-demand program that is associated with a video-on-demand
program listing wherein the indication is provided with the video-
on-demand program listing;
allowing a viewer to select to view the video clip preview
from the program guide display;
displaying the video clip preview on the viewer television
equipment; and
without requiring any additional viewer input, displaying an
ordering display screen after the video clip preview of the video-
on-demand program is displayed, wherein the ordering display
screen provides the viewer with the opportunity to select an
ordering option to order the video-on-demand program.

The Examiner relies on the following references:
Banker US 5,357,276 Oct. 18, 1994
Marshall ’796 US 5,523,796 June 4, 1996
Garfinkle US 5,530,754 June 25, 1996
Marshall ’587 WO/95032587 Nov. 30, 1995
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Youman US 5,629,733 May 13, 1997
Dunn US 5,752,160 May 12, 1998

Patent Owner appeals the following rejections:
Claims 1–4, 7–10, and 13–16 under 35 U.S.C. § 102 as anticipated by
Dunn;
Claims 1, 7, and 13 under 35 U.S.C. § 102 as anticipated by or under
35 U.S.C. § 103(a) as unpatentable over Garfinkle or under 35 U.S.C.
§ 103(a) as unpatentable over Banker and any one of Garfinkle or Dunn;
Claims 5, 11, 17, 21, 22, 26–28, 33, 39, 40, 44–46, 51, 57, 58, 62–64,
69, 73, 74, 76, 77, 79, 80, 82, 83, 85, 86, 88, 89, 91, 92, 94, 95, 97, 98, 100,
101, 103, 104, 106, and 107 under 35 U.S.C. § 103(a) as unpatentable over
Garfinkle and Marshall ’796;
Claims 6, 12, 18–20, 37, 38, 55, and 56 under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle, Marshall ’796, and Marshall ’587;
Claims 28, 46, 64, 78, 84, 90, 96, 102, and 108 under 35 U.S.C.
§ 103(a) as unpatentable over Garfinkle, Youman, and Marshall ’796;
Claims 23, 34, 35, 41, 52, 53, 59, 70, and 71 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Garfinkle, Marshall ’796, and
Youman, alone or in further combination with Banker;
Claims 5, 6, 11, 12, 17–22, 26–28, 33, 37–40, 44–46, 51, 55–58,
62–64, and 69 under 35 U.S.C. § 103(a) as unpatentable over Garfinkle,
Banker, and Marshall ’796;
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Claims 24, 25, 42, 43, 60, and 61 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dunn and Marshall ’796, alone or in
further combination with Banker;
Claims 36, 54, and 72 under 35 U.S.C. § 103(a) as unpatentable over
Dunn and Banker;
Claims 29–32, 47–50, and 65–68 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Garfinkle, Marshall ’796, and Dunn,
alone or in further combination with Banker; and
Claims 75, 81, 87, 93, 99, and 105 under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle, Marshall ’796, Youman, and Dunn.
ISSUE
Did the Examiner err in rejecting claims 1–108?
ANALYSIS
Displaying an ordering display screen after the video clip preview of
the video-on-demand program is displayed – claims 1, 7, 13 (and
claims 73, 79, 85, 91, 97, and 103)
Garfinkle
The Examiner finds that Garfinkle discloses displaying an ordering
display screen after the video clip preview of the video-on-demand program
is displayed, as recited in claim 7, for example, because Garfinkle discloses
“a display screen 48 which can . . . assist the user . . . [in] ordering desired
video products” and that this display “would remain as the preview ends
[and would therefore be] displayed after the video clip preview,” as recited
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in claim 1. Final Act. 4; see also Ans. 6–8. Claims 1, 13, 73, 79, 85, 91, 97,
and 103 recite a similar feature.
Patent Owner argues that “Garfinkle cannot meet the claimed display
of an ordering display screen ‘after’ the . . . preview is displayed” because
“Garfinkle displays its ordering menu during the display of the . . . preview.”
App. Br. 58; see also App. Br. 64 (claims 73, 79, 85, 91, 97, and 103). We
are not persuaded by Patent Owner’s argument. Even assuming that
Garfinkle discloses displaying an ordering display screen during the display
of a video clip preview, as Patent Owner contends, we note that claim 7, for
example, recites displaying a screen after the preview is displayed. Claim 7
does not also recite not displaying the screen during the display of the
preview. Nor does Patent Owner demonstrate persuasively that claim 7
recites this hypothetical requirement.
Claim 1 recites a “means for” displaying an ordering display screen
after the video clip preview is displayed. Patent Owner argues that claim 1
is “limited to the structure, material, or act described in the specification [or
equivalents] as performing the claimed function” and that the
“corresponding structure” must be an “algorithm” that “does in fact require
that the ordering display screen be unavailable prior to the video clip
preview.” Reply Br. 5–7 (citing Spec. Figs. 8, 9, 11:26–31). Patent Owner
cites to column 11, lines 26–30 (and Fig. 9) of the Specification as
supposedly disclosing that the ordering display screen must be “unavailable
prior to the video clip preview.” However, the cited portion of the
Specification does not disclose this feature.
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Instead, the Specification discloses that a viewer chooses between
various “options.” Spec. 11:20–21. In one option, the viewer may “request
a video clip” and, in response, “the video clip is presented on the viewer’s
display screen (step 102).” Spec. 11:21–22, 26–28. In another option, the
viewer may alternatively “request the program” and, in response, a “control
screen may appear which requires viewer input (step 104) [which the] . . .
view may fill-out . . . to order the requested program.” Spec. 11:23–24,
29–30. In neither of these options disclosed in the Specification is the
ordering display screen “unavailable prior to the video clip preview,” as
Patent Owner contends.
Patent Owner argues that the Specification discloses that the ordering
display screen cannot be displayed during the display of the video clip
preview (and that this negative feature should be imported into the claims)
because the Specification illustrates a flowchart in Figure 9 in which “step
102” (during which time a video clip preview may be displayed) precedes
the depiction of “step 104” (during which time a control screen is displayed).
See, e.g., Reply Br. 5–7. Even assuming Patent Owner to be correct that
features disclosed in the Specification should be imported into the claims,
Patent Owner does not demonstrate sufficiently that Figure 9 (or any other
portion of the Specification) also discloses a step of terminating the video
clip preview prior to displaying the ordering display screen. As such, the
Specification actually discloses that the ordering display screen may be
displayed during the display of the video clip preview (as well as after). At
least because we disagree with the Patent Owner that the Specification
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discloses that the ordering display screen cannot be displayed during the
display of the video clip preview, and because Patent Owner does not
demonstrate sufficiently that features that are not disclosed in the
Specification should be, nevertheless, imported into the claims, we also
disagree with Patent Owner that this feature that is not disclosed in the
Specification should be imported into the claims.
Patent Owner also argues that the Specification discloses another
example in which a viewer “request[s] a video clip” and “[a]fter the video
clip preview has been provided, the viewer may be presented with a display
screen.” Reply Br. 3–4 (citing Spec. Figs. 6A, 6B). However, as previously
explained, Patent Owner does not demonstrate persuasively that the
Specification (in the example described in Figs. 6A and 6B of the
Specification or elsewhere in the Specification) also discloses that an
ordering display screen must not be displayed during the display of the
video clip preview.
Dunn
The Examiner finds that Dunn discloses “overlaying an order button
[i.e., an ‘ordering display screen’] on the video display to allow a user to
order the video-on-demand program.” Final Act. 5; see also Ans. 9–10.
Patent Owner argues that “claims 1, 7, and 13 specifically exclude the
possibility of displaying an ordering display screen until ‘after the video clip
preview . . . is displayed,’” but that “Dunn requires that an ordering button
be displayed during its trailer.” App. Br. 59. We are not persuaded by
Patent Owner’s argument for at least the reasons previously discussed. For
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example, claim 7 recites displaying an ordering display screen after the
video clip preview of the video-on-demand program is displayed. Claims 1
and 13 recite similar features. None of claims 1, 7, or 13 also recites that the
possibility of displaying an ordering display screen until after the video clip
preview is displayed is “specifically excluded,” as Patent Owner appears to
contend. Rather, claims 1, 7, and 13 appear to encompass displaying an
ordering display screen after the video clip preview is displayed as well as at
any other time. Therefore, for at least this reason and reasons previously
discussed, we cannot agree with Patent Owner’s contention that claim 7, for
example, “specifically exclude[s] the possibility of displaying an ordering
display screen until” after the video clip preview is displayed. Hence, we
need not determine whether or not Dunn “requires that an ordering button be
displayed during its trailer.”
Regarding Patent Owner’s arguments pertaining to importing features
that are not disclosed in the Specification into the claims (Reply Br. 5–7), we
disagree with Patent Owner for at least the previously stated reasons.
Patent Owner does not provide additional arguments with respect to
the combination of Banker and any one of Dunn or Garfinkle with respect to
this issue as applied to claims 1, 7, and 13 (or claims 73, 73, 79, 85, 91, 97,
and 103). App. Br. 61.
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Program guide display displayed simultaneously with a television
program and video clip preview displayed simultaneously with the
video-on-demand program listing and the television program – claims
73, 79, 85, 91, 97, 103, 28, 46, 64
Continue to display the video-on-demand program listing when
displaying a video clip preview – claims 21, 39, 57 (and claims 23,
41, 59, 75, 81, 87, 93, 99, and 105)
Claim 79 recites that the program guide display is displayed
simultaneously with a television program. Claim 79 also recites displaying
the video clip preview simultaneously with the video-on-demand program
listing and the television program. Claims 73, 85, 91, 97, 103, 28, 46, and
64 recite similar features. Claim 39 recites displaying the video clip preview
while the program guide display continues to display the video-on-demand
program listing. Claims 21 and 57 recite a similar feature. The Examiner
states that the combination of Garfinkle and Marshall ’796 discloses these
features. Final Act. 11–14, 26–28, 66–67 (citing Marshall ’796, Figs. 7–8,
2:23–25, 2:23–25, 3:42–45).
For example, the Examiner states that Marshall ’796 (in combination
with Garfinkle, for example) discloses a “program guide [that] displays a
table of programs with their corresponding channels” (Final Act. 11 (citing
Marshall ’796 Figs. 6–7)) and displaying “a video clip preview of the
program” with “written description of the program including a date, time,
channel, description, and other related information. Final Act. 11–12 (citing
Marshall ’796 Figs. 7–8, 2:23–25, 3:42–45), 26–28 (citing Marshall ’796,
Figs. 7, 8). We agree with the Examiner.
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As the Examiner indicates, Marshall ’796 discloses an example in
which a television program is displayed simultaneously with a program
guide display (Marshall ’796, Fig. 7) in which a video clip preview, a
program listing, and a television program are displayed subsequently and
simultaneously (Marshall ’796, Fig. 8, 2:23–25 (“program guide data display
in which the description data and video clip are displayed”)), as recited in
claim 79, for example, with the program listing being displayed
simultaneously with the television program (Marshall ’796, Fig. 7) and the
program listing information “continuing to be” displayed simultaneously
with the video clip preview (Marshall ’796, Fig. 8), as recited in claim 39,
for example.
Patent Owner argues that Marshall ’796 fails to disclose that the video
clip preview is displayed simultaneously with the program listing because,
according to Patent Owner, “Marshall’s system removes the listing and
displays the video clip in an entirely new screen” and that the program
listing displayed in the “entirely new screen” “in no way resembles the
[program] listing shown with icon 40 in figure 7.” App. Br. 63. We
disagree with Patent Owner that the “program listing” “in no way
resembles” itself in Marshall ’796.
Marshall ’796 discloses an example in which a program guide is
displayed that contains a program listing (e.g., a program listing containing
information for a specific television program). Marshall ’796, Fig. 7. After
a user selects the specific television program listing, the “description data”
for the specifically selected television program are displayed simultaneously
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with a video preview. Marshall ’796, Fig. 8, 2:23–25. The “program
listing” displays information for the same specifically selected television
program (e.g., the title of the television show is “M*A*S*H”). Patent
Owner does not explain persuasively how program listings that provide
descriptive information for the same television program “in no way
resembles” itself. Indeed, one of skill in the art would have understood that
descriptive information for the same television program, even if presented in
a different format, would resemble itself to the extent that the same
information is provided.
Patent Owner argues that “[d]espite discussing the same program
‘M*A*S*H,’ the information in figure 8 [of Marshall ’796] is clearly not the
listing with icon 40 depicted in figure 7 [of Marshall ’796].” App. Br. 64;
see also App. Br. 66–67, 77. We disagree that mere differences in layout
design of the display of the same information is sufficient to create a listing
that is “not the listing.” In addition, Patent Owner does not assert or
demonstrate persuasively that changing the layout of the display of the
information creates a functional difference of any kind. Indeed, mere
changes in the layout or graphical design of the presentation of the same
information result in only cosmetic (i.e., design) changes to the interface.
Hence, any such modification of the presentation of the same data would
constitute a mere obvious design choice in which only superficial
modifications might be made with insubstantial changes in the content itself
such that the program listing would retain its identity as “the listing” of the
same program.
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Majority of television program unobscured – claims 20, 38, 56, 74,
80, 86, 92, 98, 104
Claim 38 recites displaying the partial screen video window over a
given television program such that a majority of the television program
remains unobscured. The Examiner states that it would have been obvious
to one of ordinary skill in the art, in view of Garfinkle and Marshall ’796, to
display
program guide information . . . such that at least a portion or a
majority of the television program remains unobscured in order
to enable a viewer to conveniently and simultaneously view the
currently watched television show and a preview of a program
of interest, all while also perusing other information related to
the program.
Final Act. 9. We agree with the Examiner.
Marshall ’796, for example, discloses displaying a display over a
television program. Marshall ’796, Figs. 7, 8. One of ordinary skill in the
art, not being an automaton, would have understood that a larger overlying
display would obscure more of the underlying display (i.e., the television
program) and that the more the underlying display is obscured, the less of
the underlying display one of skill in the art would be able to see.
Conversely, one of skill in the art would have understood that the smaller the
size of the overlying display, the more of the underlying display would be
visible. After no more than mere routine experimentation and the
application of these basic principles of common sense, one of skill in the art
would have understood that if a majority of the underlying display were to
be unobscured by the overlying display, one of skill in the art would be able
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to view both the overlying display (in its entirety) and a sufficient amount of
the underlying display.
Patent Owner argues that it would not have been obvious to one of
skill in the art to have reduced the size of the overlying display in relation to
the underlying display to ensure that a majority of the underlying display
were unobscured (and, thus, visible) because “the proposed modification
amounted to extra work and greater expense for no apparent reason.” App.
Br. 65. However, Patent Owner does not demonstrate persuasively that
merely reducing the size of the overlying display would require substantial
“extra work and greater expense.” In addition, Patent Owner does not
demonstrate sufficiently that reducing the size of the overlying display
would be “for no apparent reason” given that, as discussed above and based
on no more than mere common sense principles, one of skill in the art would
be able to better view the underlying display.
Indication continues to be displayed with the video-on-demand
program listing – claims 23, 41, and 59 (and claims 75, 81, 87, 93,
99, and 105)
Claim 41 recites an indication displayed with the video-on-demand
program listing. The Examiner finds that the combination of Garfinkle,
Marshall ’796, and Youman discloses this feature. Final Act. 40–41; Ans.
14, 20. We agree for at least the reasons set forth by the Examiner.
Patent Owner argues that Garfinkle fails to disclose “an indication . . .
in the VOD program listing.” App. Br. 67; see also App. Br. 77. However,
as the Examiner states, Garfinkle discloses “an indication . . . in the . . .
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program listing.” Final Act. 40; Ans. 14, 20. Garfinkle discloses, for
example, “flags to indicate whether . . . a lead-in is available and whether a
trailer is available.” 3:44–47. Patent Owner does not assert or demonstrate
sufficiently that the “flag” that “indicates,” as disclosed by Garfinkle, differs
from the “indication,” as recited in claim 41, for example.
Continuing to display program listing without modifying the location
or content of the program guide display – claims 24, 42, 60 (and
claims 75, 81, 87, 93, 99, and 105)
Claim 42 recites displaying the video clip preview without modifying
the location or content of the program guide display. The Examiner finds
that Dunn discloses “the same content and location of the program guide
display as a preview is displayed.” Final Act. 22–23. We agree with the
Examiner. For example, Dunn discloses displaying a program guide display
that includes a program listing (e.g., an interface as illustrated in Dunn Fig.
6, 10:32–56, 43–44, 12:1–3) and also displaying “trailers for the selected list
. . . will run in a continuous loop.” Dunn 12:22–23. One of skill in the art
would have understood that it would have been obvious, at least, that the
program guide display would not be modified substantively at least because
Dunn does not disclose that the program guide display is modified and does
not disclose any function requiring modification of the program guide
display as the “trailers . . . run in a continuous loop.”
Patent Owner argues that Dunn “teaches away from displaying the
clip without modifying the location or content of the program guide display”
but fails to provide a specific rationale as to how Dunn supposedly “teaches
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away” from this feature. App. Br. 71. In view of the explicit disclosure of
Dunn of displaying a video preview (i.e., a “trailer”) without a disclosure of
either modifying the location or content of the program guide display or a
potential reason to do so, we cannot agree with Patent Owner that Dunn
supposedly “teaches away” from this disclosure.
Patent Owner does not provide additional arguments pertaining to
Garfinkle, Marshall ’796 or Banker. App. Br. 71, 78–79.
Program guide is a single cell – claims 27, 45, 63, 76, 82, 88, 94, 100,
and 106
The Examiner finds that Marshall ’796 discloses “the program guide
display . . . as a single cell,” as recited in claim 45, for example. Ans. 24
(citing Marshall ’796, Fig. 6). Patent Owner argues that “figure 8 of
Marshall ’796” has “multiple different segments of information [and fails to]
meet[] the claimed requirement of ‘a single cell.’” App. Br. 72. However,
even assuming that a unit of information as depicted by Marshall ’796
contains “multiple different segments,” as Patent Owner contends, Patent
Owner does not explain sufficiently a difference between the unit of
information of Marshall ’796 and the “single cell” (also a unit of
information), as recited in claim 45. For example, Patent Owner does not
demonstrate that claim 45, for example, also recites that the “single cell”
must not contain “multiple different segments of information.” We do not
independently identify this hypothetical claim limitation.
In addition, Patent Owner does not indicate that claim 45 also recites a
functional relationship with the claimed “single cell.” As such, the “single
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cell,” as recited in claim 45, is a mere formatting (or design) option with no
bearing on the function of the claimed invention. Such a design choice as to
whether to present information within one “cell” or to present the same
information in multiple “cells” would have been obvious to one of ordinary
skill in the art because the choice constitutes no more than a choice between
a finite number of design options (i.e., 2 design options), the choice being
within the knowledge possessed by one of skill in the art, and the result of
the choice between the two options having no bearing on the function of the
claimed invention. If “a person of ordinary skill in the art would recognize
that [a known technique] would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In this
case, presenting information within a “cell” was a known technique that
would have accomplished known results (i.e., information displayed in a
“cell”) and using the technique of presenting information within a “cell”
would not have been beyond the skill of one of ordinary skill in the art. In
other words, such a choice would have been obvious to one of ordinary skill
in the art.
Patent Owner does not provide additional arguments with respect to
Banker. App. Br. 73.
Displaying multiple video-on-demand program listings
simultaneously – claims 28, 46, 64
Claim 46 recites that the program guide display displays multiple
program listings simultaneously. The Examiner finds that “Garfinkle
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discloses the program guide display displays multiple video-on-demand
program listings simultaneously.” Final Act. 52 (citing Garfinkle Fig. 3).
We agree with the Examiner. Garfinkle discloses an example in which
multiple (i.e., more than one – e.g., Video A, Video B, . . .) program listings
are displayed simultaneously. Garfinkle, Fig. 3. Hence, one of ordinary
skill in the art would have understood that displaying multiple program
listings was known in the art. Combining this known process of displaying
multiple program listings in a program guide (e.g., Garfinkle) with the
known process of displaying the program guide simultaneously with other
components such as a video preview and/or a television program (as
disclosed by, e.g., Marshall ’796) would have resulted in no more than the
predictable result of displaying multiple program listings in a program guide
simultaneously with other known displayed components. Such a
combination would have been obvious to one of ordinary skill in the art.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR,
550 U.S. at 416.
Patent Owner argues that Garfinkle fails to disclose or suggest
displaying “multiple . . . program listings simultaneously” as well as
displaying the multiple listings “in a program guide display” that is
“displayed simultaneously” with a “video clip preview, and a television
program.” App. Br. 73–74. However, Patent Owner does not sufficiently
refute the prima facie showing of obviousness of claims 24, 46, and 64 over
the combination of Garfinkle and Marshall ’796 as previously discussed.
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Patent Owner does not provide additional arguments with respect to
Banker. App. Br. 74.
Displaying the video clip preview, video-on-demand program listing,
and television program in non-overlapping regions – claims 34, 52,
70, 78, 84, 90, 96, 102, and 108
Claim 52 recites that the video clip preview, the video-on-demand
program listing, and a television program are each displayed in respective
non-overlapping regions. The Examiner finds that Youman discloses “the
desirability to simultaneously scan program guide information while
continuously viewing at least one selected program on the television
receiver.” Final Act. 63 (citing Youman Figs. 11–13, 1:63–2:15 (disclosing
“split screens”), cols. 13–14). Youman discloses displaying information in
“split screen.” One of skill in the art would have understood that displaying
information in a “split screen” was a known practice. Combining this
known practice disclosed by Youman with the known practice of displaying
different information on a display (e.g., Garfinkle or Marshall ’796) would
have resulted in the predictable result of displaying different information in
multiple windows that do not overlap (e.g., in “split screen”).
Patent Owner argues that Youman discloses that in “split screen,” “the
listings would still overlap on top of either the program, the advertisement,
or both.” App. Br. 75. However, Patent Owner does not explain sufficiently
how one of skill in the art, given the disclosure of “split[ting] the screen to
show, for example, broadcast programs in combination with
advertisements,” would understand that the information (e.g., broadcast
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programs and advertisements) would be overlapping. One of skill in the art
would have understood that displaying different information in “split screen”
would entail displaying one desired information in one screen and the other
desired information in another screen at the same time and would not have
understood that the information would overlap each other, which would be
in direct contrast to the general understanding of the term “split screen” as
would have been understood by one of skill in the art.
Patent Owner does not provide additional arguments with respect to
Banker. App. Br. 76.
SUMMARY
We affirm the Examiner’s rejection of claims 1, 7, and 13 under
35 U.S.C. § 102 as anticipated by or under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle or under 35 U.S.C. § 103(a) as unpatentable
over Banker and any one of Garfinkle or Dunn; claims 1–4, 7–10, and 13–16
under 35 U.S.C. § 102 as anticipated by Dunn; claims 5, 11, 17, 21, 22,
26–28, 33, 39, 40, 44–46, 51, 57, 58, 62–64, 69, 73, 74, 76, 77, 79, 80, 82,
83, 85, 86, 88, 89, 91, 92, 94, 95, 97, 98, 100, 101, 103, 104, 106, and 107
under 35 U.S.C. § 103(a) as unpatentable over Garfinkle and Marshall ’796;
claims 6, 12, 18–20, 37, 38, 55, and 56 under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle, Marshall ’796, and Marshall ’587; claims 28,
46, 64, 78, 84, 90, 96, 102, and 108 under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle, Youman, and Marshall ’796; claims 23, 34, 35,
41, 52, 53, 59, 70, and 71 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Garfinkle, Marshall ’796, and Youman, alone or in further
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combination with Banker; claims 5, 6, 11, 12, 17–22, 26–28, 33, 37–40,
44–46, 51, 55–58, 62–64, and 69 under 35 U.S.C. § 103(a) as unpatentable
over Garfinkle, Banker, and Marshall ’796; claims 24, 25, 42, 43, 60, and 61
under 35 U.S.C. § 103(a) as unpatentable over the combination of Dunn and
Marshall ’796, alone or in further combination with Banker; claims 36, 54,
and 72 under 35 U.S.C. § 103(a) as unpatentable over Dunn and Banker;
claims 29–32, 47–50, and 65–68 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Garfinkle, Marshall ’796, and Dunn, alone or in
further combination with Banker; and claims 75, 81, 87, 93, 99, and 105
under 35 U.S.C. § 103(a) as unpatentable over Garfinkle, Marshall ’796,
Youman, and Dunn.
Requests for extensions of time in ex parte reexamination proceedings
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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Patent Owner:

Ropes & Gray LLP
Patent Docketing 39/361
1211 Avenue of the Americas
New York, NY 10036-8704

Third Party Requester:

Alleman Hall McCoy Russell & Tuttle LLP
806 SW Broadway
Suite 600
Portland, OR 97205-3335

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JEFFERY, Administrative Patent Judge, CONCURRING:
I concur with majority’s decision, but I would treat Appellant’s
arguments on pages 5 to 7 of the Reply Brief regarding the particular
aspects of the means-plus-function limitations of claim 1 as waived. These
arguments are untimely in this appeal because they were presented for the
first time in the Reply Brief, and, consequently, the Examiner did not have a
reasonable opportunity to respond to them.
Under 37 C.F.R. § 41.41(b)(2),1 we do not consider any argument
raised in the Reply Brief which (1) was not raised in the Appeal brief, or (2)
is not responsive to an argument raised in the Examiner’s Answer, unless
good cause is shown—an exception that is inapplicable here.
In the Appeal Brief, Appellant groups independent claims 1, 7, and 13
together in connection with various arguments regarding associated prior art
rejections. See App. Br. 56–62. That is, independent claim 1—a claim
including means-plus-function limitations—was grouped with independent
claims 7 and 13 lacking means-plus-function limitations. Therefore, to the
extent that claim 1 is narrower than claims 7 and 13 due to claim 1’s means-
plus-function limitations that must be interpreted in light of the
corresponding structure in the Specification or its equivalents,2 and that such
a difference in claim scope forms an independent basis for patentability,
such a distinction is simply not an issue in the Appeal Brief.

1 This rule applies to this ex parte reexamination appeal as well as ex parte
appeals. See MPEP § 2273.
2 See 35 U.S.C. § 112(f); see also In re Donaldson Co., Inc., 16 F.3d 1189,
1193 (Fed. Cir. 1994) (en banc).
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Perhaps this silence explains why the Examiner treats independent
claim 7—not independent claim 1—as exemplary of this group. See Ans. 6.
Understandably, the Examiner did not further elaborate on the means-plus-
function limitations of claim 1 because their potentially-narrowing aspects
were not contested separately from limitations commensurate with those in
the other claims in the group, namely claims 7 and 13.
Similarly, Appellant groups independent claims 73 and 91, which
both contain means-plus-function limitations, with independent claims 79,
85, 97, and 103, which do not. See App. Br. 61–64. Here again, to the
extent that means-plus-function limitations in claims 73 and 91 are narrower
than the other independent claims in this group, namely claims 85, 97, and
103, and that this difference is a separate basis for patentability, such a
distinction was simply not an issue in the Appeal Brief.
Yet in the Reply Brief, Appellant, among other things, emphasizes the
alleged shortcomings of the Examiner’s rejection with respect to the
corresponding structure associated with the recited “means for displaying an
ordering display screen after the video clip preview” limitation in claims 1,
73, and 91. Reply Br. 5–7. This argument, premised on the unique—and
potentially narrowing—aspects of means-plus-function limitations was
simply not raised in the Appeal Brief, nor was it reasonably responsive to
remarks made in the Examiner’s Answer. As noted above, the Examiner
considered the claims lacking means-plus-function limitations as exemplary
of other independent claims—including means-plus-function claims—in
their respective groups and, understandably, did not further elaborate on
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their construction.
Notably, at the oral hearing, Appellant’s representative acknowledged
that claim 1 was narrower than claim 7, and argued that it was clear from the
Examiner’s Answer that the Examiner ostensibly “had not appreciated the
means-plus-function interpretation” of claim 1, and that is why Appellant
made that purported error clear in the Reply Brief. See Oral Hn’g Transcript
filed Aug. 30, 2016, at 4:11–6:2.
But from my reading of the Appeal Brief, I fail to see where the
particular construction of the means-plus-function claims, and their
potentially-narrower scope as compared to other independent claims, was an
issue to reasonably notify the Examiner of such an error. This independent
aspect was simply not raised and, understandably, the Examiner did not
further elaborate on it.
That said, to the extent that the Examiner’s findings are erroneous
because of a narrower construction of means-plus-function limitations, it is
incumbent upon Appellant to allege such an error in the Appeal Brief with
supporting explanation and evidence directed to this particular issue to give
the Examiner a reasonable opportunity to respond to such a contention. In
so doing, the record would reflect both Appellant’s and the Examiner’s
respective positions regarding the means-plus-function limitations in light of
their potentially-narrower construction. By providing a complete record on
this contested issue, then, the issue would be ripe for our decision as to
whether the Examiner’s findings and conclusions are erroneous in light of
the particular construction of the means-plus-function limitations.
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But we have no such record here. Accordingly, I would treat the issue
as waived. Nevertheless, I concur with the majority’s decision on the merits
of this issue, and all other aspects of the opinion, for the reasons indicated in
the opinion.